Appeal No. 2007-0317 Page 2
Application No. 09/944,932
Procedural History
On June 11, 2003 appellant filed a Brief appealing the final rejection of
claim 11 under 35 U.S.C. § 102(b) as being unpatentable over Plant Breeder’s
Rights Application No. 03000204 in view of public sales in the United Kingdom.
See Brief, filed June 11, 2003, page 2. On January 10, 2005 the Merits Panel
entered its Decision (‘05 Decision) vacating the rejection of record and
remanding the application to the Examiner for further consideration. The Merits
Panel stated, “[t]he question raised in this appeal involves whether evidence of
foreign sales of the claimed reproducible plant variety may enable an otherwise
non-enabled printed publication disclosing the plant, thereby creating a bar under
35 U.S.C. § 102(b).” ’05 Decision, page 1. The Merits Panel explained, “[t]he
Court of Appeals for the Federal Circuit considered that issue in In re Elsner, 381
F.3d 1125, 72 USPQ2d 1038 (Fed. Cir. 2004), and held in the affirmative.” Id.
The Merits Panel noted, however, that the Elsner
court stated that “[t]he foreign sale must not be an obscure, solitary
occurrence that would go unnoticed by those skilled in the art.” Id.
at 1131, 72 USPQ2d at 1043. The court also stated that the record
did not establish that “even if the interested public would readily
know of the foreign sales, those sales enabled one of ordinary skill
in the art to reproduce the claimed plants without undue
experimentation.” Id.
’05 Decision, bridging paragraph, pages 1-2.
In explaining the facts of record, the Merits Panel found (’05
Decision, page 2) that the Examiner
is relying upon applicant’s admission that the claimed plant “was
sold in the United Kingdom as early as April 1, 1998” as evidence
that United Kingdom PBR 03000204 is enabled. Examiner’s
1 Claim 1 of this appeal is the same as claim 1 now before this panel.
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Last modified: September 9, 2013